Prosecution Group Luncheon June, 2011 Patents

Clear and Convincing Survives Microsoft Corp. v. i4i Ltd. Pship (US 2011) §282 requires proof of invalidity defense by clear and convincing evidence (8-0 decision) Validity presumption a fixture of common law when §282 enacted [H]eavy burden of persuasion, with proof of the defense by clear and convincing evidence Common-law term in statute comes with its common-law meaning Ergo, no conclusion that standard changed simply because §282 fails to reiterate it expressly

Clear and Convincing Survives Presumption not weaker for information not considered during prosecution [N]ew evidence of invalidity likely carries more weight than evidence considered by PTO [B]urden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain if PTO did not have all material facts before it Jury instructions will handle effect of new evidence

Analogous ArtIn re Klein (FC 2011) FC: 5 cited references not analogous art, excluded from nonobviousness analysis Recall: reference is analogous if either –in the same field of endeavor as the invention or –reasonably pertinent to inventors problem Same field of endeavor not addressed; rejections were based only on the reasonably pertinent test

In re Klein Device for measuring/mixing sugar and water for bird feeders PTO: obvious over references com- bined with known ratios for species Problem: making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals –Solid item separators were not pertinent: none... shows a partitioned container that is adapted to receive water or contain it long enough –References for dividing liquids that would later be mixed not pertinent because they did not address multiple ratio problem and did not have movable dividers

In re Klein Defining a narrow purpose for the invention, versus risk of limiting claim scope Is a reference in a separate field will non-analogous unless pertinent to the entire problem? FC did not cite KSR; PTO viewed KSR as expanding scope of analogous art (MPEP (a)). Commentator: Klein approach to analogous art may make obviousness analysis less subjective h/t to PatentlyO.com

Therasense Curtails application of inequitable conduct Heightened intent and materiality standards Egregious/fraudulent conduct still sanctionable USPTO carefully studying the decision; expects to soon issue guidance to applicants related to the prior art and information they must disclose

Stanford v. Roche (US 2011) Federally-funded contractor does not necessarily own patent rights to inventions resulting from funded projects (7-2 decision) Stanford argued that rights vest automatically vest under the Bayh-Dole Act Court: US patent rights have initially vested in the inventor; language of Bayh-Dole Act does nothing to change that